Ex Parte Drew et al

Patent Trial and Appeal Board

Oct 31, 2016

12893795 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/893,795 09/29/2010 Julie Ward Drew
56436 7590 11/02/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
82264730 4783
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/02/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIE WARD DREW and RUXIAN WANG
Appeal2014-005296
Application 12/893,795
Technology Center 3600
Before: BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants 1 seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-20 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM-IN-PART.
1 The Appellants identify the real party in interest as "Hewlett-Packard
Development Company" (App. Br. 2.)
Appeal2014-005296
Application 12/893,795
THE INVENTION
The Appellants' claimed invention is directed to utility determinations
in product replacement and plan coverage (Spec., para. 9). Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A computing device comprising:
a processor to:
receive a request to determine an expected net utility
attributable to a customer based on a service plan coverage decision
and a product replacement decision of the customer for a plurality of
corresponding time periods,
recursively determine expected net utility values for each
possible coverage decision and each possible product replacement
decision in each period of the plurality of time periods, wherein the
expected net utility value for each coverage decision is based on an
immediate utility value in a current time period and the expected net
utility value of the product replacement decision from a next time
period, and
determine the expected net utility attributable to the customer
over the plurality of time periods using a set of initial values and the
determined utility values for each time period.
THE REJECTIONS
The following rejections are before us for review2 :
1. Claims 1-20 are rejected under 35 U.S.C. § 112, first paragraph
for failure to meet the enablement requirement.
2. Claims 1-20 are rejected under 35 U.S.C. § 112, first paragraph
for failure to meet the written description requirement and show possession
of the invention.
2 The Answer indicates at page 13 that the rejection under 35 U.S.C. § 112,
second paragraph has been withdrawn.
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3. Claims 9-15 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
4. Claims 1, 9, and 10 are rejected under 35 U.S.C. § 102(b) as
anticipated by Steinberg (US 2005/0220280 Al, pub. Oct. 6, 2005).
5. Claims 2-5 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Steinberg.
6. Claims 6, 12-14, and 16-18 are rejected under 35 U.S.C.
§ 103(a) under Steinberg and Pierce (US 2009/0043596 Al, pub. Feb. 12,
2009).
7. Claims 7, 8, 15, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) under Steinberg, Pierce, and Greenstein et al. (US 2006/0064304
Al, pub. Mar. 23, 2006, "Greenstein").
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 3
ANALYSIS
Rejections under 35 US.C. § 112,first paragraph
Enablement
The PTO bears the initial burden when rejecting claims for lack of
enablement. It is by now well-established law that the test for compliance
with the enablement requirement in the first paragraph of 35 U.S.C. § 112 is
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(Explaining the general evidentiary standard for proceedings before the
Patent Office.).
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Application 12/893,795
whether the disclosure, as filed, is sufficiently complete to enable one of
ordinary skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404
(Fed. Cir. 1988). "Enablement is not precluded by the necessity for some
experimentation .... However, experimentation needed to practice the
invention must not be undue experimentation. The key word is 'undue,' not
'experimentation."' In re Wands, 858 F.2d at 736-737.
To evaluate whether a disclosure would require undue
experimentation, the Federal Circuit has adopted the following factors to be
considered:
( 1) The quantity of experimentation needed to make or use the
invention based on the content of the disclosure;
(2) The amount of direction or guidance presented;
(3) The existence of working examples;
( 4) The nature of the invention;
( 5) The state of the prior art;
( 6) The relative skill of those in the art;
(7) The level of predictability in the art; and
(8) The breadth of the claims.
In re Wands, 858 F.2d at 737. The Examiner's analysis must consider all the
evidence related to each of these factors, and any conclusion of
nonenablement must be based on the evidence as a whole.
Here, that analysis in the Final Rejection (mailed Aug. 21, 2013,
"Final Act.") at pages 2---6, and the Answer (mailed Jan. 31, 2014, "Ans.") at
pages 2--4 has not been sufficiently performed and the rejection under
enablement is not sustained.
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Application 12/893,795
vVritten Description
The Examiner has determined that the written description requirement
is not met by the following claims: in claim 1, for the term "immediate
utility value;" in claim 9 for the term "plurality of utility values;" in claims
12 and 17 for the terms "ul" and "ua0 "; and in claim 16 for the term "utility
to a customer" (Final Act. 7-11; see also Ans. 6-8).
In contrast, the Appellants have argued that these rejections are
improper citing to portions of the Specification including paragraphs 3 7, 41,
58, 61, and 67 (App. Br. 15-17; see also Reply Br. 12-20).
We agree with the Appellants. Here, proper support for the terms
"immediate utility value" and "plurality of utility values" is provided for
instance in the Specification at paragraph 37. Proper support for the terms
""ul" and "ua0 " is provided for instance in the Specification at paragraph 18.
Proper support for the claim term "utility to a customer" is provided for
instance in the Specification at paragraph 61. For these reasons, this
rejection of record is not sustained.
Rejections under 35 USC§ 101
The Examiner has determined that claim 9 is unpatentable under
35 U.S.C. § 101 because the claim term for a "machine-readable storage
medium" is directed to transitory, non-patentable subject matter (Final Act.
10; see also Ans. 13).
The Appellants argue that the claim term "machine-readable storage
medium" is not directed transitory subject matter (App. Br. 19, 20).
We agree with the Examiner. In the Precedential Decision ex Parte
Mewherter, App. No. 2012-007692, May 5, 2013, the claim term "machine-
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Application 12/893,795
readable storage medium" was determined to be directed to non-statutory
subject matter in light of the Specification. Here, the Specification at
paragraph 13 states that the machine readable storage medium can be "any
electronic, magnetic, optical, or other physical storage device that contains
or stores executable instructions." Here, the cited claim term is broad
enough to include a transitory wave and this rejection of record is therefore
sustained.
Rejections under 35 USC§ 102(b) and 103(a)
The Appellants have argued that the rejection under 35 U.S.C.
§ 102(b) of claim 1 is improper because the cited prior art fails to disclose:
recursively determine expected net utility values for each possible
coverage decision and each possible product replacement decision in
each period of the plurality of time periods, wherein the expected net
utility value for each coverage decision is based on an immediate
utility value in a current time period and the expected net utility value
of the product replacement decision from a next time period.
(App. Br. 20-24; see also Reply Br. 21-24).
In contrast, the Examiner has determined that the cited claim
limitation above is found in Steinberg at paragraphs 14, 15, 32, 37--44, 54,
and 57 (Final Act. 12; see also Ans. 14--16).
We agree with the Appellants. Here, the above cited portions of
Steinberg fail to disclose the argued claim limitation above. For example,
while the citation to Steinberg at paragraph 37 does disclose that user
information relating to products and service plans may be compared to
achieve rankings, this does not specifically disclose for instance determining
"net utility values for each possible coverage decision and each possible
product replacement decision in each period" where the net utility value for
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Application 12/893,795
1 1 • • ' '. 1 1 • 1. ' ' • 1.' 1 • ' eacn coverage aec1s10n --is oasea on an nnmemate muny vame ma current
time period and the expected net utility value of the product replacement
decision from a next time period." The other citations to Steinberg fail to
disclose this as well. Claim 9 contains similar language to that addressed
above, as well as its dependent claim 10. For these reasons, the rejections
under 35 U.S.C. § 102(b) are not sustained for claims 1, 9, and 10.
Turning to the rejections made under 35 U.S.C. § 103(a) for
dependent claims 2-8 and 11-15, the same portions of Steinberg have been
relied on to disclose the similar above cited claim limitations and the
rejection of these claims is therefore not sustained (see Ans. 17-24).
Claim 16 contains claim limitations similar to those addressed above.
The rejection of claim 16 and its dependent claims under 35 U.S.C. § 103(a)
relies on Steinberg at the same above citations to disclose those limitations
(Ans. 17-24). As discussed above, these portions of Steinberg fail to
disclose those similar limitations and these rejections are likewise not
sustained.
CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 112 ( enablement), 35 U.S.C. § 112
(written description), 35 U.S.C. § 102(b), and 35 U.S.C. § 103(a), as listed in
the Rejection section above.
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 101 as listed in the Rejection
section above.
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Application 12/893,795
DECISION
The Examiner's rejections of claims 1-20 under 35 U.S.C. §§ 102, 103,
and 112 are reversed.
The Examiner's rejection of claims 9-15 under 35 U.S.C. § 101 is
affirmed
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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